Black Friday is now a registered trade mark in Bulgaria. Is it enforceable, though?

The term Black Friday was successfully registered as a trade mark even for retail services. Exactly how worrisome is this registration?

Earlier this year the Bulgarian Patent Office registered the word mark BLACK FRIDAY and its translation into Bulgarian (ЧЕРЕН ПЕТЪК) for various services in class 35, including services such as presentation of goods, presentation of retail goods for sale through communication means, distribution of samples, retail and wholesale of pharmaceutical, veterinary, sanitary and medical preparations. The registration caused a public outcry and raised genuine concerns as to what would be the actual scope of protection of such a registration and would it allow the trade mark owner to prohibit the use of the term by the other retailers.

To address the above issues, let’s start first with the concept of a trade mark and the essential requirements it should meet in order to deserve registration.

According the Law on Marks and Geographical Indications the trade mark is a sign that can be represented graphically and can distinguish the goods or services of one person from those of other persons. Therefore, in order to comply with the requirements of the law a trade mark must be capable of distinguishing the goods or services of a particular commercial origin. A sign which does not possess distinctive character, because it describes essential characteristic of the goods or services it designates, or because it is a term commonly used in the relevant sector, cannot be registered as a trade mark (Art. 11 (1) 1, 2, 3 and 4 from the LMGI).

Whether a sign could serve as a trade mark and whether it is sufficiently distinctive is decided always in relation to the good or services it is applied for and is considered from the perspective of the relevant consumer of those goods or services. If from the point of view of the consumers the sign is distinctive, it can serve as trade mark. If the consumer perceives it as description of certain characteristic of the products, or as commonly used promotional or advertising word or slogan, it cannot indicate the particular commercial origin and should not be registered as a trade mark.

The marks in question have been registered for various services in class 35, such as: administrative management of hotels updating and maintenance of data in computer databases, cost analysis, business management, business audits, accounting services, recruitment, but also for: presentation of goods, presentation of retail goods for sale through communication means, distribution of samples, retail and wholesale of pharmaceutical, veterinary, sanitary and medical preparations.

For many of the services, like administrative management of hotels, business audits, accounting services, recruitment, the term Black Friday does not have particular meaning and could be viewed by the relevant consumers of those services as a badge of origin, meaning the mark is eligible for registration.

For some services, however, such as presentation of goods, distribution of samples, retail and wholesale of pharmaceutical, veterinary, sanitary and medical preparations, or any other merchandising service listed in the registration, the registration of the indication Black Friday as a trade mark is more than contradictory.

The term Black Friday, used in relation to shopping, originates from the US tradition of the promotional sales offered by retailers on the day following Thanksgiving Day. It is currently an internationally used term to designate a specific day, on which the retailers offer their products at discounted rate. In Bulgaria it has been used with that same connotation for several years now. Therefore, the Bulgarian consumers are aware of the meaning of the term, understand it as indication of a certain day of promotional sales not in one particular but in various outlets and by various retailers.

Consequently, when used in relation to retail services, the term does not differentiate the products of a particular commercial origin and thus could not serve the main purpose of a trade mark. On that account, the registrations for those services are rather weak and are exposed to cancellation requests.

The trade mark owner already announced by a press release that the other retailers are allowed to use the mark BLACK FRIDAY to designate the particular day for promotional sales. Will the trade mark owner continue to act so peacefully and why then it needed the registrations in the first place is yet to be seen.